PTO Guidance After Alice

June 30, 2014

Last week, the USPTO provided the patent examining corps with Preliminary Examination Instructions in light of the Supreme Court’s opinion in Alice Corp.  The memo indicates that the Supreme Court has extended the framework set forth in Prometheus to all claims directed to laws of nature, natural phenomena, and abstract ideas.  Previously, the PTO had only applied Prometheus to laws of nature.

The instructions advocate a two part analysis with respect to abstract ideas.  First, determine whether the claim is directed to an abstract idea.  The instructions do not provide any guidance on how to determine whether the claim is directed to an abstract idea.  This is not surprising because the Supreme Court’s opinions have not provided such guidance either.  I guess you’re supposed to know it when you see it.

If the claim is directed to an abstract idea, the analysis should proceed to step two.

If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. In other words, are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea? Consider the claim as a whole by considering all claim elements, both individually and in combination.

The instructions then refer to certain types of limitations that may qualify the claims as including “significantly more” than the mere abstract idea.  The examples include improvements to another technology or technological field, improvements to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

The instructions also refer to the example of the claims in Alice Corp. as claims that did not include the required “significantly more” limitations to an abstract idea, such as the programming of a general computer to perform the abstract idea.

The Supreme Court’s “you’ll know it when you see it” type of analysis makes it very difficult for inventors, patent applicants, and patent attorneys to have any type of certainty as to whether an invention or the claims to an invention will pass the Supreme Court’s muster.

The attack on patents continues . . .

Supreme Court on Patentable Subject Matter

June 19, 2014

USSupremeCourtWestFacadeThe Supreme Court issued its opinion in Alice Corp. v. CLS Bank Int’l.  Unfortunately, the Court did not heed Chief Judge Rader’s admonition to “consult the statute” in holding that all claims are invalid as not directed to patentable subject matter.

Justice Thomas, writing for a unanimous Court, wrote that the claims of the patent “are drawn to the abstract idea of an intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”  The Court returned to the Bilski concept of “pre-emption” of an entire field of application.

Next, the Court unfortunately returned to the “framework” that it set forth in Prometheus where it conflated the concepts of patent eligibility with novelty and non-obviousness.  The Court referred to this framework as a two step approach.  First, it is necessary to determine whether the claims are directed to a patent ineligible concept (this seems to assume the answer), and then to determine whether the claims include “something more”, an inventive concept.  This is, of course, where the Court refers to the prior art to determine subject matter eligibility.

In Alice Corp., the Court determined that the claims are directed to the patent ineligible concept, the abstract idea, of an intermediated settlement.  The claims are merely directed to the use of a third party to mitigate settlement risk.  The Court held this to be akin to the hedging found to be abstract in Bilski.

Turning to the second step of Prometheus “framework”, the Court concluded that the method claims at issue merely require generic computer implementation, which fails to transform the abstract idea into a patentable invention.  Next, the Court refers to each of the claimed steps of the method and refers to them as merely “conventional.”  This is, again, code for “not novel or obvious.”  It seems that a prior art examination would have better resolved this question that subject matter eligibility.

Finally, the Court turned to the question of the patent eligibility of the computer system and computer-readable medium claims.  These were the claims that the Federal Circuit had the most difficulty with.  That court could not reach consensus on the system claims, as 5 judges found them eligible and 5 ineligible.  The Supreme Court did not find a meaningful distinction between the method and system claims, holding

the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.

Justice Sotomayor wrote a separate concurrence that was joined by Justices Ginsburg and Breyer.  She has taken Justice Stevens’ mantle from Bilski and would hold that a method of doing business do not qualify as a “process” under § 101.

Unfortunately, it seems that we’ve now come much too far to heed the admonition to “consult the statute.”

Judge Rader to Retire From the Federal Circuit

June 17, 2014

Judge RaderIn a rather bizarre series of events, Randall Rader has gone from chief judge of the Federal Circuit to former judge of the Federal Circuit in just a few weeks.

Prior to his appointment to the bench, Judge Rader served as counsel to the Senate Judiciary Committee, including the Subcommittee on the Constitution and the Subcommittee on Patents, Trademarks, and Copyrights.  In 1988, he became a judge on the US Court of Federal Claims, the court that hears monetary claims against the US government.  In 1990, President Bush elevated Judge Rader to the Federal Circuit.

Judge Rader served on the court with distinction, and also taught patent law and other advanced intellectual property law classes at various law schools in Washington, DC, Virginia, and others.  He is also a co-author of a widely used patent law casebook.  In 2010, he succeeded Judge Paul Michel as the sixth chief judge of the Federal Circuit.

Last month, news emerged that Chief Judge Rader sent an e-mail praising attorney Edward Reines, a partner at Weil, Gotshal & Manges, who argues regularly before the Federal Circuit.  The e-mail heaped praise on Reines and urged him to show the e-mail to others.

Shortly after the e-mail became public, Chief Judge Rader recused himself from a number of cases where he had heard arguments involving Reines.  He also publicly released a letter that he sent to his colleagues where he explained his recusals and apologized for “a breach of the ethical obligation not to lend the prestige of the judicial office to advance the private interests of others.”  He also realized that the e-mail could cause others to think that this attorney could unduly influence the Chief Judge in his judicial duties.

At nearly the same time, Judge Rader announced that he was stepping down as chief judge of the court, although his term was scheduled to run until 2017.  He would remain an active judge, but wished to spend more time teaching, lecturing, and traveling.

A few weeks later, Judge Rader has now announced his retirement from the court, effective June 30.  Although no reference to the e-mail was made in either Judge Rader’s stepping down as chief judge or in his retirement from the bench, one has to assume based on the timing that they are linked.  Judge Rader leaves behind a 24 year legacy of service on the court, including 4 years as chief judge.  That legacy appears somewhat tarnished in light of the ethical breach.

Chief Judge Prost

Judge Sharon Prost succeeded Judge Rader as the seventh chief judge of the Federal Circuit on June 1.  Chief Judge Prost, 63, was appointed to the court by President Bush in 2001 after also serving for 8 years as an attorney for the Senate Judiciary Committee.

Other Members of the Court

The retirement of Judge Rader will present another open seat on the Federal Circuit that has seen a great deal of turn over in recent years.  Several of the other 11 active members of the court are also eligible for retirement or senior status, should they so choose.

Chief Judge Prost, 63, joined the court in 2001 and is eligible for senior status in 2016.

Judge Pauline Newman, 86, joined the court in 1984 and is eligible for senior status.

Judge Alan Lourie, 79, joined the court in 1990 and is eligible for senior status.

Judge Timothy Dyk, 77, joined the court in 2000 and is eligible for senior status.

Judge Kimberly Moore, 46, joined the court in 2006.

Judge Kathleen O’Malley, 58, joined the court in 2010 after serving 16 years as a district court judge.

Judge Jimmie Reyna, 61, joined the court in 2011.

Judge Evan Wallach, 64, joined the court in 2011 after serving 16 years as a judge on the Court of International Trade.  He is eligible for senior status in November.

Judge Richard Taranto, 57, joined the court in 2013.

Judge Raymond Chen, 45, joined the court in 2013.

Judge Todd Hughes, 47, joined the court in 2013.

In addition, Judges H. Robert Mayer, 73, S. Jay Plager, 83, Raymond Clevenger, 76, Alvin Schall, 70, William Bryson, 68, and Richard Linn, 70, continue to serve on the court while in senior status.

Interviews with Patent Examiners

June 10, 2014

Oral communication is often more effective than written communication.

Once I’ve been through a round of written responses with a patent examiner, if I feel that the examiner is not being receptive to my position, I will conduct an interview with the examiner.  Often, the examiner will indicate that he or she had not fully grasped the position before and now better understands the distinctions between the claimed invention and the prior art.  Even in cases where I don’t get the examiner to agree with me, we usually understand each other’s position better which enables me to better advise my client on how to proceed with the case.

It is often easy for an examiner to cut-and-paste language from previous office actions when responding to an applicant’s amendment.  Sometimes this is because the examiner doesn’t fully appreciate the applicant’s position, sometimes this is because the applicant and examiner are talking past each other.  An interview can often resolve these issues as the examiner must listen and consider the applicant’s position without resorting to cut-and-paste.

This isn’t to say that all interviews are successful.  Many examiners are not used to oral communication and will be non-committal.  This is especially true for junior examiners.  Junior examiners do not have authority to allow claims without review by a senior examiner or supervisor.  Thus, examiner interviews with junior examiners require a senior examiner with such authority to also be present.  The problem is that the senior examiner has his or her own docket and often is not familiar with the application and issues or is not prepared for the interview.  Such interviews can be frustrating and maybe even unhelpful.  And, many junior examiners are very reluctant to allow patents.

In any event, even if the interview does not result in allowance of the claims, I have more information about the application and the examiner’s position than I did prior to the interview.  I can advise my client that the examiner will not be persuaded.  Perhaps we are more likely to get a positive result through appeal rather than another round of responses.

Interviews are not a way to avoid making comments on the record that become part of the prosecution file.  If there is an outstanding office action, most examiners will require the applicant to send in a proposed amendment or set of arguments that will become a part of the record.  This can sometimes be avoided if the interview is conducted after a response has been filed.  After the interview, a written summary is prepared by both the examiner and the applicant that becomes part of the file.

Nonetheless, if I determine during an interview that a particular argument is clearly not going to persuade the examiner, and I don’t think the argument is vital to the case, I may omit it from my next response, thereby keeping it out of the record.

Federal Circuit is Reversed, Twice

June 2, 2014

USSupremeCourtWestFacadeThe Supreme Court has issued two opinions in patent cases today, in both cases reversing the Federal Circuit.

Nautilus, Inc. v. Biosig Instruments, Inc.

In the first opinion, the Court was reviewing the Federal Circuit’s standard for indefiniteness.  As noted previously,  patent applicants must particularly point out and distinctly claim their invention.  The Federal Circuit used a legal standard for proving that a claim was indefinite that was very difficult to meet, erring on the side of the patent owner.  Justice Ginsburg delivered the opinion for a unanimous Supreme Court, which reversed the Federal Circuit standard.

We conclude that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement. In place of the “insolubly ambiguous” standard, we hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecu­tion history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

The Supreme Court has thus overruled the Federal Circuit’s “insolubly ambiguous” standard in favor of a “reasonable certainty” standard when the claims are read in light of the specification and prosecution history.

The Court remanded the case to the Federal Circuit for further determination of the patent in this suit.

Limelight Networks, Inc. v. Akamai Techs., Inc.

In 2012, a fractured Federal Circuit permitted that multi-party infringement for induced infringement, even in the absence of a direct infringement by a single party.  This result was contrary to the general rule that a party can only be liable for inducement to infringe a patent if there is direct infringement of the patent.

A unanimous Supreme Court, per Justice Alito, has reversed the earlier Federal Circuit opinion.  He reasons that this case is really quite straight forward.  The Court reiterated that a party can only be liable for induced infringement if there is a direct infringement of the patent.

The Federal Circuit had previously decided in Muniauction that to infringe a method claim, the same entity must perform each step of the claim.  The parties dispute whether this holding was correct, but the Supreme Court refused to address that issue.  The Court did note, however, that if that is correct, there can be no liability for induced infringement either.  A party cannot be held liable for inducing conduct that is not itself infringement.  The Supreme Court was unpersuaded by analogies to other areas of tort law.

The Court’s holding in this case is quite simple.  If there is no direct infringement, there can be no induced infringement.  If the Federal Circuit revisits the definition of direct infringement, such as by overruling Muniauction to permit multi-party direct infringement, then there could possibly be multi-party induced infringement.  Until that time, the Court answers the question in the negative.

Senate to Slow Down Troll Legislation

May 22, 2014

Yesterday, Sen. Patrick Leahy (D-VT) issued a press release where he states that he has taken the currently pending patent troll legislation off the Senate Judiciary Committee agenda.

Sen. Leahy notes that while there is general agreement that patent trolls abuse is a problem, there has been no agreement on how to combat the problem.  The interested parties have not been able to reach a consensus on the best way to proceed.  Thus, Chairman Leahy has decided to wait to consider the issue until at least later this year.

The House passed the Innovation Act in December.  Since then, there has been a significant amount of debate by the relevant parties on the issues.  Many have pointed to problems with the legislation as not addressing the real problems with patent trolls, as being too broad so as to encompass many legitimate companies, and others.  And, probably due to the lack of leadership at the agency, the PTO has not yet weighed in on the issues.

After passing the America Invents Act with little input from many of the affected parties, this time the Senate appears to be doing it right.  Let’s get all the input and have a proper debate before rushing this through.

Reduced PTO Fees

May 20, 2014

Under PTO rules, a “Small Entity” is entitled to pay certain PTO fees associated with patent prosecution at a reduced rate, usually 50%.  As the PTO raises filing and post-issuance fees, it is important to determine just who qualifies as a Small Entity.

In the early 1980s, Congress substantially raised many of the PTO fees associated with patent prosecution and introduced some new fees that had not previously been charged, such as issue fees and maintenance fees.  To help off-set the burden this would cause for smaller or non-profit parties, Congress also introduced the Small Entity Status.

PTO rules define a Small Entity as an individual inventor or inventors, a small business concern, or a nonprofit organization.  In order to qualify as one of these three types of entities, none of the rights associated with a patent or patent application may have been assigned or licensed to any party that would not qualify for Small Entity Status, nor must there be any obligation on the part of the small entity to make such an assignment or license.  All of the rights in the patent or patent application must be held by a small entity.

In other words, IBM cannot set up a small holding company for all of its patents in order to qualify for Small Entity Status if it wishes to retain any rights in the patents.  Nor can IBM pay Small Entity Fees and wait until the patent issues to assign it to the company if the inventor(s) had an obligation to assign the invention to the company at the time of filing.

An individual inventor is anyone who has not assigned his patent application to a business or other organization.  The rules define a Small Business Concern as a company having fewer than 500 employees.  The rules define a Nonprofit Organization as a university, 501(c)(3) organization, or a scientific or educational organization under any state law or in a foreign country.  If an individual inventor, small business concern, or nonprofit organization licenses the patent or patent application to a company that doesn’t qualify for Small Entity Status, the full price fees must be paid at the PTO.

Previously, the PTO required the applicant or assignee to sign a verification of Small Entity Status.  Now, the simple written assertion of such status or even the payment of Small Entity Fees is sufficient.  This puts more of the burden on the patent applicant and the patent attorney to verify Small Entity Status.

If a small entity pays large entity fees, the small entity may request a refund of the overpayment.  Conversely, if Small Entity Fees are paid by an entity that is actually a large entity, it can usually be corrected by simply paying the required deficiency, if the incorrect amount was paid in good faith.  The rules do warn, however, that fraudulently paying Small Entity Fees when the applicant is not entitled payment of such fees can result in the resulting patent being held unenforceable due to inequitable conduct.

The PTO notes applicants have a contiuing duty to conduct a thorough investigation of the facts surrounding a claim of Small Entity Status.  The facts should especially be revisited at the times of paying the issue fee and maintenance fees.  For example, a patent issued to a Small Entity may have been licensed to a non-small entity between the time of its issuance and the time to pay a maintenance fee, or the company itself might have grown to more than 500 employees, making Small Entity Status inappropriate.


The America Invents Act included provisions for a new entity called a “micro-entity” that would pay certain fees at a 75% reduction of the normal amount.  To qualify as a micro-entity, certain conditions must be met.

For unassigned applications, the entity must not include any inventors that have been named on 5 or more patent applications, not including provisional or non-US applications.  Thus, “micro-entities” are newer inventors.  The application must not be licensed or the inventors must not be legally obligated to license or assign the application.  Each inventor must have an income of less than 3 times the average gross income reported by the Department of Labor for the previous calendar year.

For assigned applications, the inquiry is similar.  None of the inventors must be named on 5 or more patent applications.  The application can only be assigned to an entity with 5 or fewer employees.  And the assignee must have an income of less than 3 times the average gross income for the previous calendar year.

Finally, for applications where the applicant receives the majority of his income from an institution of higher learning or where the applicant is under an obligation to assign or license the application to an institution of higher learning, micro-entity status applies.  This is regardless of the income level or number of applications previously filed by the applicant.

Thus, micro-entities will be a very small group of applicants, but it can result in significant savings on PTO fees.

When paying PTO fees, it is important to stay up-to-date on whether the applicant qualifies as a Small or Micro Entity.

Supreme Court Rules on Patent Litigation Fees

May 5, 2014

USSupremeCourtWestFacadeLast week, the Supreme Court issued its decisions in Octane Fitness, LLC v. Icon Health & Fitness, Inc. and Highmark, Inc. v. Allcare Health Management Systems, Inc.  The question before the Court in the former case was the correct standard for an “exceptional case” under which a court may award attorneys’ fees and costs to the prevailing party.  In the latter case, the question was the correct standard of review on appeal.

Octane Fitness

As I discussed previously, section 285 of the Patent Act permits a trial court to award attorneys’ fees to the prevailing party in “exceptional” cases.  What exactly constitutes an exceptional case?

The Federal Circuit had set a rather high standard for fee shifting under this provision.  That court held that a case is exceptional only in the circumstances where either (1) there has been some material inappropriate conduct, such as litigation misconduct or inequitable conduct at the PTO, or (2) the litigation has been brought in subjective bad faith and the allegations are objectively baseless.  These are indeed high standards to meet.

Now, the Supreme Court has stepped into the fray by unanimously holding that the Federal Circuit’s standard for when a case is “exceptional” is too high.

We hold, then, that an “exceptional” case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.  District courts may determine whether a case is “exceptional” in the case-by-case exercise of their discretion, considering the totality of the circumstances.

The Court held that the Federal Circuit’s standard is so high that it makes § 285 largely superfluous.  Finally, the Court rejected the Federal Circuit’s requirement that the party seeking fees must prove its entitlement to them by clear and convincing evidence.


Octane Fitness largely foreshadowed the outcome in Highmark.  The determination of when a patent case is “exceptional” appears to be largely fact specific, rather than a matter of law.  Unfortunately, when dealing with appeals, the Federal Circuit often misses this distinction, preferring that it review most anything de novo, i.e., without regard to the factual determinations by the district court.

A unanimous Supreme Court also reversed the Federal Circuit in this case.  The district court determination of whether a case is “exceptional” should be reviewed by the Federal Circuit for abuse of discretion.  This is a standard that gives more deference to the trial court.  This means that the appellate court cannot simply substitute its own opinion for that of the district court.  Instead, the appellate court may review the determination of the district court only when there is an error of law or a clear error of the facts.  Otherwise, the determination is within the discretion of the district court.  That makes sense given that the district court judge actually reviewed the evidence and observed the actions by the parties and witnesses at trial.

Fee Shifting

Patent Trolls.  We’ve talked about them a fair amount.  Many have argued that fee shifting is the way to deter spurious lawsuits brought by such entities.  Several members of Congress seem to agree.

At least partially in response to the Federal Circuit’s restrictive interpretation of  § 285, the House of Representatives passed the Innovation Act that seeks to change patent litigation in the US to a loser pays system in nearly all cases.  The Innovation Act would amend § 285 to state that a court “shall award” attorneys’ fees and expenses to the prevailing party unless the losing party’s position was “reasonably justified” or other special circumstances would make an award unjust.

The Supreme Court seems to have cleaned up this mess.  The discretionary standard seems better than an absolute standard.  These cases are not always cut and dry; sometimes they are close.  The proposed statutory revisions might have a chilling affect on parties in bringing legitimate cases.  Under the Supreme Court’s opinions, district courts can still use their discretion to sanction parties that bring bad cases.

My wife, Professor Kristen Osenga, wrote a piece at Prawfsblawg on this particular issue.

F2014 Halfway Numbers

April 28, 2014

The following is a comparison of the PTO’s numbers from March 2014 with December 2013 (at my last numbers update).  Time to refer again to the PTO’s Data Visualization Center to see how things are going.

First Action Pendency – 18.6 Months

In December, first action pendency was 17.4 months.  This is the first rise we’ve seen in this number in quite some time.  The PTO was doing a nice job with first action pendency, but the number is now the highest it has been since last April.

“Traditional” Total Pendency – 27.8 Months

Traditional pendency is down from 28.6 months in December and over 35 months at the beginning of FY2011.  This number continues to drop, as the PTO shows progress here.

Application Pendency with RCEs – 37.8 Months

This number is up slightly from 37.6 months in December, but is down from 39.4 months at the end of FY2012.  Overall, the number is not up significantly, but also reverses the trend of decreasing pendency numbers.

Applications Awaiting First Office Action – 616,021

This number is up from 595,361 in December and 584,998 in September.  The backlog is at the highest level since August 2012, a 3.5% increase during the quarter and a 5.3% increase during the fiscal year.

Patent Application Allowance Rate – 51.3%, 70.0%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are up slightly from 51.0% and 69.6%, respectively, in December.  The 18.5+% difference between the two numbers is, however, troubling.  It seems that RCEs are still being forced; especially considering the next number.

RCE Backlog – 74,310

This number is down from 79,120 in December, a 6% reduction.  Continuing progress in this matter is necessary to increase prosecution efficiency.  The After Final Pilot Program is supposed to prevent examiners from churning RCE filings.

Number of Patent Examiners – 8,041

This number is up from 8,013 in December.  In November, the PTO passed 8,000 examiners for the first time ever.  Although improving examiner efficiency is a solid goal, as long as filings continue to increase, so should the number of examiners.

Pendency from Application Filing to Board Decision - 86.1 Months

The crisis at the Board continues, although pendency is inching slowing downward from 87.3 months in December.  It is now at its lowest level since FY2012.   Pendencies of over 7  years from filing to Board decision are not acceptable.  New technologies become obsolete prior to getting a patent or decision by the Board.  The PTO hired a number of additional patent judges and attorneys to deal with this issue, but the sharp increase in the number of appeals filed has made tackling this an impossibility.   The Board now has significantly greater responsibilities with the beginning of the new post-grant review proceedings.

The Patent Trial and Appeal Board has not updated is typical production report since November.  Thus, the information below is a bit different that I’ve reported in the past.  It now comes from a PTAB Dashboard.

At the end of March, the Board had 25,664 pending appeals from ex parte application prosecution, up from 25,151 (2%) in November.  14,165 of the appeals have been pending for at least 14 months.

Due to the failure to update the data, it is difficult to know how the PTAB is doing on other types of appeals or cases or how many are being filed.


The PTO is doing a good job on the front end.  There appears to be some stagnation on the progress the PTO was previously making during examination.  Other problems begin once an application reaches a final office action.  RCE filings seem to be dropping somewhat, but the rate is still pretty high.  Many or most of these are the result of examiners forcing them on applicants.  This is very inefficient and increases application cost and pendency significantly.

The PTO has still not come up with a plan to deal with its crisis at the Board.  By not updating performance data, it appears that the PTO is trying to hide this information from applications.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame.  The Board’s added workload with numerous types of proceedings for it to decide has made things more congested.  Presumably, if the proceedings work well, there may be many more filed in the coming months and years.  This could make things even worse.  Appeals must be decided more quickly.

Patent Pending

April 21, 2014

I’m sure you’ve seen the words “patent pending” or “patent applied for” on a product or package before.  What exactly do these phrases mean?  What legal rights are attached to them?


Patentees are generally only entitled to infringement damages once an infringer has notice of the infringement.  The patent marking statute permits patentees to provide notice to the public by marking a product or product package that is covered by a patent with the patent number.  This is why it is strongly recommended that patent owners mark their patented products or product packages with the number.

Patent applicants will often mark products or product packages with the phrase “patent pending” or “patent applied for”.  These phrases do not have a legal meaning under US patent law, as they do not indicate that the product is covered by a patent or that someone who copies the product is guilty of patent infringement.  The purpose of these phrases is to inform the public that the product is the subject of a patent application that has been filed and is pending in the Patent Office.  Although in general a patent application cannot be infringed, the public is informed that a patent may issue in the future that covers that product.  In this way, the phrases provide some deterrent effect against infringement.  Even if a patent does not issue for the product, it is believed that the patent applicant may deter some parties from copying the product while a patent application is pending, thus providing the applicant with a competitive advantage.

Patent marking is also used as a marketing technique.  Many consumers believe that a patented product is a cutting edge product–it must be better or an improvement over previous products.  “Patent pending” or “patent applied for” may provide this marketing advantage as well.


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